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Two Solutions to a Single Problem – Can I Claim Just One of the Solutions?

In the recent Crown Packaging Tech. v. Ball Metal Beverage Container Corp. case, the Federal Circuit provided further guidance on the written description requirement, adding to its post-Ariad jurisprudence. In this latest case, related to soda cans (or “pop” cans, as this Midwestern-raised author prefers), the court was tasked with determining whether a specification that presented two solutions for solving a single problem provided written support for claims directed to only one of the two solutions. The defendant alleged that the specification only supported claims with both solutions because it only disclosed embodiments that incorporated both solutions. The plaintiff Crown owned two patents that each described two ways of saving metal when seaming can bodies and can ends: 1) increasing the slope of the chuck wall (the can end wall); and 2) limiting the width of the anti-peaking bead (the indented ring typically found just inside the rim of a can top). Some of the claims, however, covered just the use of the increased slope. The court rejected the premise that if two solutions relate to the same problem, they must both be recited in the independent claims. In reaching its decision, the court found that the specification supported two separate and clearly described solutions. The court also relied on the premise that a patentee is not limited to only the figures (which each illustrated both solutions), as well as on the doctrine of claim differentiation (dependent claims recited a reduced width of the anti-peaking bead). One of the judges dissented, arguing that there needed to be a disclosure of a can that included the increased slope but that lacked the reduced-width anti-peaking bead. In view of this decision, practitioners should keep in mind the benefits of drafting specifications with multiple and diverse embodiments and in using dependent claims for the benefit of making future claim differentiation arguments. Nevertheless, a specification describing a single embodiment may not be too limiting provided appropriate care is taken to avoid language specifically limiting the patentee to that embodiment.